Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Double Patenting
1. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AlA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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2. Instant claims 27,35,42 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,400,192 herein the *192 patent. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 27,35,42 of the instant application is anticipated by claim 1 of the *192 patent.
The limitations from instant claims 27, 35,42 “the user being associated with a first appliance having a sensor configured to generate use signals indicative of an operational state of the first appliance and a transmitter configured to transmit the use signals over a network; as part of the heightened authentication procedure, causing transmission of a signal to the first appliance, wherein the signal is configured to cause the first appliance to activate one or more externally detectable features associated with the first appliance; verifying, at a server, the activation of the one or more externally detectable features associated with the first appliance based on data from the sensor; and verifying of the activation” are present in claim 1 of the *192 patent.
Therefore, claim 1 of the *192 patent is in essence a “species” of the generic invention of instant claims 27,35,42. It has been held that a generic invention is anticipated by a species within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Circ. 1993).
Claim Rejections- 35 U.S.C § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
3. Claim 28 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
4. Claim 28 recites, “autonomously triggering a schedule comprising a maintenance or repair schedule…”
Under BRI (Broadest Reasonable Interpretation), Examiner interprets, autonomously as performing a task without outside control or human intervention.
It is unclear how the schedule is triggered autonomously. Claim 28 and independent claim 27 does not recite any type of software or computer hardware to implement the autonomous step of claim 28.
Appropriate correction is required.
Claim Rejections- 35 U.S.C § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
5. Claims 27-46 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 27,35,42 are directed to a method, which is a statutory category of invention. (Step 1: YES).
Representative claim 27 recites the limitations of:
augmenting a conventional authentication procedure with a heightened authentication procedure for a user, the user being associated with a first appliance having a sensor configured to generate use signals indicative of an operational state of the first appliance and a transmitter configured to transmit the use signals over a network;
as part of the heightened authentication procedure, causing transmission of a signal to the first appliance, wherein the signal is configured to cause the first appliance to activate one or more externally detectable features associated with the first appliance;
verifying, at a server, the activation of the one or more externally detectable features associated with the first appliance based on data from the sensor; and
determining to pass the heightened authentication procedure based on the verifying of the activation.
The claim elements that are recited in bold above, (augmenting a conventional authentication procedure with a heightened authentication procedure for a user, indicative of an operational state of the first appliance; as part of the heightened authentication procedure, to cause the first appliance to activate one or more externally detectable features associated with the first appliance; verifying, the activation of the one or more externally detectable features associated with the first appliance based on data from the sensor and determining to pass the heightened authentication procedure based on the verifying of the activation), which under its broadest reasonable interpretation, covers performance of the limitation(s) as a mental process, more specifically a concept performed mentally by a human with pen and paper (steps for activating an appliance based on authentication of a user)
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a certain method of a concept performed in the human mind, then it falls within the “mental process” grouping of abstract ideas.
Claims 35,42 recite substantially the same subject matter as claim 27 and are abstract for similar reasons.
(Step 2A-Prong 1: YES. The claims are abstract)
This judicial exception is not integrated into a practical application. Limitations that are not indicative of integration into a practical application include: (1) Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (MPEP 2106.05.f), (2) Adding insignificant extra solution activity to the judicial exception (MPEP 2106.05.g), (8) Generally linking the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05.h).
Claims 27,35, 42 includes the following additional elements:
-A first appliance having a sensor
-A transmitter
-A network
-A server
The first appliance having a sensor, transmitter, network and server are recited at a high level of generality and are being used in their ordinary capacity and are being used as a tool for implementing the steps of the identified abstract idea, see MPEP 2106.05(f), where applying a computer or using a computer as a tool to perform the abstract idea is not indicative of a practical application.
Therefore, the claim as whole, looking at the additional elements individually and in combination, are no more than mere instructions to apply the exception using generic computing components and is not a practical application. MPEP 2106.05(f).
The additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Therefore claims 27,35,42 are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO). The additional claimed elements are not integrated into a practical application)
Representative claim 27 fails Step 2B because the claim as a whole, looking at the additional elements individually and in combination, are not sufficient to amount to significantly more than the identified abstract idea. As discussed above with respect to integration of the abstract idea into a practical application, there are no additional elements recited in the claim beyond the judicial exception.
Mere instructions to implement an abstract idea, on or with the use of generic computer components, or even without any computer components, cannot provide an inventive concept - rendering the claim patent ineligible.
Thus claims 27, 35, 42 are not patent eligible. (Step 2B: NO.) The claims do not provide significantly more)
Dependent claims 28-34, 36-41, 43-46 which further define the abstract idea that is present in their respective independent claims 27,35, 42 and thus correspond to a Mental process and hence are abstract for the reasons presented above.
Claim 28 further defines the method of claim 27. The limitation (triggering a schedule comprising a maintenance or repair schedule based on passing the heightened authentication procedure) is part of the identified abstract idea.
The additional element of “autonomously triggering” has been addressed above, see the 35 U.S.C 112 rejection above.
Claim 33, further defines the abstract idea as recited in claim 27. The additional element of the first appliance is one of a plurality of appliances selected from a group consisting of a solar panel, a battery assisted vehicle, a plumbing appliance, or a heating ventilation and air conditioning appliance is recited a high level of generality, operating in its ordinary capacity, and are being used as a tool to implement the steps of the identified abstract idea, see MPEP 2106.05(f).
Claim 34 further defines the abstract idea as recited in claim 27. The detecting of electricity caused by a burst of electricity on the power circuit is generally linking the use of the abstract idea to a particular technological environment (measuring electricity consumption associated with power circuits), see MPEP 2106.05(h).
Claim 37 further defines the abstract idea recited in claim 35. The additional element of the plurality of smart-home appliances is recited a high level of generality, operating in its ordinary capacity, and are being used as a tool to implement the steps of the identified abstract idea.
Therefore, the dependent claims do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination.
Therefore, the dependent claims 28-34, 36-41, 43-46 are directed to an abstract idea. Thus, claims 27-46 are not patent-eligible.
No Prior Art
Based on prior art search results, the prior art of record neither anticipates nor renders obvious the claimed subject matter of the instant application as a whole either taken alone or in combination, in particular, the prior art does not teach, the limitations from claim 27, “augmenting a conventional authentication procedure with a heightened authentication procedure for a user, as part of the heightened authentication procedure causes the transmitted signal to activate one or more externally detectable features associated with the first appliance and determining to pass the heightened authentication procedure based on the verifying of the activation”.
The limitations from claim 35, “augmenting the conventional authentication procedure by activating the one or more features of one or more smart-home appliances defined in the profile to provide a code detectable by a remote server that is necessary for satisfying the heightened authentication procedure.”
The limitations from claim 42, “augmenting a conventional authentication procedure by receiving a code detectable by a remote server that is necessary for satisfying the heightened authentication procedure, the code defined by activation of one or more features of one or more smart home appliances defined in a profile of the user”
The closest prior art of record:
US 2015/0276239 to Fadell et al, discloses, “A control system may include a thermostat device and boiler control device. The thermostat device may be configured to receive electrical power from second wiring terminals and provide control signals to boiler control device using a second radio when wires are not present in first wiring terminals. The thermostat device may also be configured to receive electrical power from the first wiring terminals and provide the coded control signals to the boiler control device through the first wiring terminals when wires are present in the first wiring terminals. The boiler control device may be configured to receive the control signals from the thermostat device using a third radio and selectively couple the third wiring terminals to fifth wiring terminals to selectively control activation of the boiler-based heating system when wires are not present in fourth wiring terminals.”
US Patent 8,539,567 to Logue et al, discloses, “Apparatus, systems, methods, and related computer program products for synchronizing distributed states amongst a plurality of entities and authenticating devices to access information and/or services provided by a remote server. Synchronization techniques include client devices and remote servers storing buckets of information. The client device sends a subscription request to the remote serve identifying a bucket of information and, when that bucket changes, the remote server sends the change to the client device. Authentication techniques include client devices including unique default credentials that, when presented to a remote server, provide limited access to the server. The client device may obtain assigned credentials that, when presented to the remote server, provide less limited access to the server.
US 2017/0321898 to Randell discloses, “A furnace a smart furnace monitoring system, comprising: a) a wireless communication module; and b) a control module in communication with the wireless communication module, wherein the wireless communication module is capable of sending one or more status information messages to one or more recipients via a network.”
CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMAD Z SHAIKH whose telephone number is (571)270-3444. The examiner can normally be reached M-T, 9-600; Fri, 8-11, 3-5.
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/MOHAMMAD Z SHAIKH/Primary Examiner, Art Unit 3694 6/23/2026
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